Why Use the UDRP
A brand owner who discovers a domain name that is identical or confusingly similar to his or her trade mark or trade name can usually bring an action for trade mark infringement or passing off in the English or other national courts (see
British Telecommunications Plc and others v One In A Million Ltd and others [2001] EBLR 2, [1998] EWCA Civ 1272, [1998] 4 All ER 476, [1999] ETMR 61, [1998] Masons CLR 165, [1998] ITCLR 146, [1997-98] Info TLR 423, [1999] 1 WLR 903, [1999] FSR 1, [1999] WLR 903, [1999] 1 ETMR 6). The courts can sometimes grant an interim injunction within hours of the issue of a claim form and summary judgment within a few weeks if a defendant is within their jurisdiction. They can also award damages and costs which UDRP panellists cannot. However, court orders are difficult to enforce if the defendant is abroad or his identity or whereabouts are unknown and generally litigation is slow and expensive. By contrast, an application to the WIPO for the transfer of a single domain name costs US$1,500 and a decision can be expected long before the time allowed for an exchange of pleadings. The whereabouts or identity of a respondent is not an issue because the registrar is contractually bound to implement a panellists's order for the transfer of a domain name or the cancellation of a registration.
Relevant Materials
Procedure
Domain name dispute resolution proceedings are entirely in writing. They begin when a brand owner files a
complaint. Complaints to the WIPO can be filed
directly online or on a
model complaint form attached to an email. Upon receiving a complaint,
WIPO's Arbitration and Mediation Centre checks it for formal compliance with the Rules and Supplemental Rules. Many domain name holders use businesses known as "privacy services" to hold the domain names on their behalf. The WIPO or other authorized service provider may require the disclosure of the actual holder of the domain name. When that is done, a complainant may be invited to amend his or her complaint by adding the name of the actual holder as well as the privacy service as respondents. The complaint is then served on the respondent who has 20 days in which to respond. As often as not, a respondent fails to file a
response within that time. Failure to respond does not result automatically in an adverse decision. The
complaint and any attachments or enclosures are sent to the panel who decides whether the complaint is made out.
Identical or Confusingly Similar
The first element that a brand owner must prove is that the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. Readers should note that it is necessary to prove that the domain name is identical or confusingly similar to just one trade mark and that trade mark can be registered anywhere in the world. In fact, it is not even necessary to show that a trade mark has been registered. Evidence of a right to bring an action for passing off will suffice. Lawyers acting for multinationals are tempted to refer to and exhibit their client's worldwide portfolios. There is no need for them to do so. It adds nothing to the case. Similarly, there is no need to annex authority that the ", com", ".org" or other gTLD suffix is disregarded. That is obvious. Excessive citation runs up costs and infuriates the panel who has to read all that matter for a US$1,000 fee. Identity or confusing similarity is a matter of impression and usually self-evident.
Trade mark registrations or the facts and matters giving rise to an action for passing off can conveniently be stated in para VI "Factual and Legal Grounds" of the model form. Any explanation as to why the domain name is similar to the trade mark should be inserted in para 12 A "The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights."
The Respondent has no Rights or Legitimate Interests in the Domain Name
The second probandum is that the respondent has no rights or legitimate interests in the domain name. This is somewhat more difficult because it appears to require the complainant to prove a negative.
Para 2.1 of the WIPO Jurisprudential Review 3.0 provides the following guidance:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
One way of making out a prima facie case is to show that none of the circumstances in para 4 (c) applies:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue"
It is also worth alleging that the use of the domain name would infringe a trade mark or constitute passing off and that the complainant granted no licence for such use. As I said above, it is rare for a respondent to file a response. It follows that the shifted burden of production is rarely rebutted.
Registration and Use in Bad Faith
The complainant has to show that the domain name was registered and is being used in bad faith. At first blush this appears to be another difficult burden to discharge as an allegation of bad faith is a serious accusation in that it connotes impropriety if not actual dishonesty. Also, a complainant must prove both registration in bad faith and use in bad faith.
The burden is alleviated by para 4 (b) of the UDRP which provides that "the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:" Those circumstances are as follows:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
At least one of those circumstances applies to most cases, particularly the last as the disputed domain name is often used for a page with sponsored links and searches. The click-through revenues from those links and searches constitute "commercial gain". As the panel is likely to have found that the domain name was confusingly similar to the claimant's trade mark the requirements of para 4 (b) (iv) will have been satisfied,. It should be noted that the circumstances in para 4 (b) constitute only evidence of use and registration in bad faith which can be outweighed by other evidence but I have never seen it done.
Further Information
I first discussed this topic in Domain Name Registration which appeared in NIPC's Chambers Newsletter for October 1997. Two years later the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the UDRP which I had envisaged in that 1997 article. Shortly after the UDRP was launched, I settled one of the first complaints from the United Kingdom (and the first one ever to be settled by an English barrister) (see Re Superfi.com WIPO Case Number D2000-0789 Eddys (NottinghamIPO) Limited, trading as Superfi v. Mr Kingsley Smith 7 Sept 2000). Not long afterwards, the WIPO invited me to join its panel and I decided my first case on 4 April 2004 (see WIPO Case No. D2004-0124 Microsoft Corporation v. TheBuzz Int (microsoftcore.com) 4 April 2004). In my capacity as a panellist, I have resolved many disputes since then, As a barrister, I have advised and drafted complaints and responses for both brand owners and domain name holders.
In my next article I will; discuss responses under the UDRP. Anyone enquiring about the UDRP may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page at other times.
